I previously wrote about the NBA 2K
copyright lawsuit that involved reproducing the tattoos of famous athletes in
video games a few years ago. Recently, the district court issued its opinion in
the case, and it was in favor of the video game company.
In
2016, Solid Oak Sketches, LLC sued the makers of the NBA 2K video game series. Solid
Oak had acquired the exclusive license to a number of tattoo designs that were
tattooed on famous basketball players, notably among them Lebron James, and it alleged
the NBA 2K games infringed its copyright rights because the video game series
recreated the tattoos on the athletes in the game.
The
court ruled that the use in the NBA 2K games was de minimis, there was an
implied license, and it was a fair use.
In ruling that the
use was de minimis, which means that the copying was trivial and did not create
a substantial similarity between the works, the judge noted that the tattoos at
issue were only on three players out of 400 available in the game, were hardly,
if at all, visible or distinct during game play, and average game play was
unlikely to include the players at issue.
The court also
found that an implied license existed for the players to “use the Tattoos as
part of their likenesses…”.[1] In
determining the implied license, the court emphasized that
(i) the Players each requested the
creation of the Tattoos, (ii) the tattooists created the Tattoos and delivered
them to the Players by inking the designs onto their skin, and (iii) the
tattooists intended the Players to copy and distribute the Tattoos as elements
of their likenesses, each knowing that the Players were likely to appear “in
public, on television, in commercials, or in other forms of media.”[2]
Because the players had an implied
license from the tattoo artists, that existed before the license granted to
Solid Oak, and the players granted the NBA the right to exploit their likeness,
2K Games use of the players’ likenesses, including the tattoos, is not an
infringement.
Finally,
the court found the use of the tattoos in the games to be fair use. In
evaluating the fair use factors, the court found (i) the commercial use of the
tattoos to be negligible, as they constituted a minor part of the game and were
barely visible,[3] (ii) the
tattoos at issue had limited expressive value,[4]
(iii) even though the tattoos were copied in total, it was done to accurately
depict the players, and the tattoos were barely visible in the game,[5]
and (iv) there was no impact on the market value of the tattoos because video
games are not a substitute for tattoos, and a market for licensing tattoos to
be used in video games would be unlikely to develop.[6]
As
I mentioned previously, this issue had been bubbling up for some time. While
tattoos, generally speaking, are entitled to copyright protection, it had been
an unanswered question of how far copyright protection would extend once the
tattoo was on someone. This decision goes a long way in determining the scope
of that protection. I think it is a solid decision, and, if appealed, I hope it
is sustained.
After
reading it, however, I am concerned about the emphasis on how the tattoos are
barely visible in the game. This leaves open possible arguments that if the
tattoo is visible, or featured prominently, such as in a portrait of a tattooed
subject, then it could be an infringement. Hopefully, the implied license
theory outlined in this decision would continue to protect an artist in such a
situation.
Until
the decision is upheld on appeal, it is still risky to recreate tattoos without
permission. As I mentioned previously, if you are a celebrity whose likeness is
likely to be recreated, obtain a waiver or assignment of any copyright rights
the tattoo artist may have. If you are someone creating a work incorporating a
tattooed subject, either have them indemnify you from harm, if it is commissioned,
or proceed with caution, as the law regarding accurate recreations of tattooed
individuals is still unsettled.
[1] Solid
Oak Sketches, LLC v. 2K Games, Inc., No. 16-CV-724-LTS-SDA, 15 (S.D.N.Y. 2020).
[2] Id.
[3] Id. at
17-19.
[4] Id. at
20.
[5] Id. at
21.
[6] Id. at
22.
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